Trademark practitioners will encounter a 2(d) Refusal (refusal due to a likelihood of confusion with a prior trademark registration) or a Notice of Opposition sooner or later in their practice. The case of Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [Precedential], reminds practitioners and applicants alike that the outcome of a 2(d) refusal or of an Opposition may be favorable if the Applicant is able to narrow its identification in such a manner as to avoid a likelihood of confusion with a prior registered mark or a senior user. A defendant may assert an affirmative defense by moving to restrict its goods and services.

Here, the applicant filed three applications for RSTUDIO in standard character format in International Classes 9, 41, & 42, for the following goods and services: computer software for statistical computing; computer software for software applications development; providing training in the use of computer software; providing training in the use of statistical methods; application service provider, computer software consultation, design and development of software; and technical support services. The Opposer filed a Notice of Opposition based on the grounds of priority and likelihood of confusion. Its registration is for ER/STUDIO in standard character format for entity relationship modeling software for SQL databases.

Before discovery closed, Applicant filed a motion to amend the application to narrow his identifications (limit his description of the goods and services). Under the Lanham Act Section 18, the Board is given equitable power to restrict the goods or services in a trademark application or registration. See 15 U.S.C. §1068, and TBMP 311.02(b). The current description of the Applicant’s goods is relatively broad. From a reading of the goods in International Class 9 it is presumed that the software incorporates all types of statistical computing software. Similarly the software design, development and training services are broad enough to include all types of software design, development and training, including those described in Opposer’s registration. However, based on the proposed modification to the identification, Applicant will narrow the descriptions to the field of “advanced” statistical software using the “R” computer software language.

The record supported the narrowing of descriptions. The record showed that the relevant consuming public (educational institutions) for Applicant’s software were “R” programmers. This particular group of consumers would be considered highly sophisticated. On the other hand, the record indicated that Registrant’s software products were sold to consultants who needed to work and build databases for others. In addition, the two parties had diverse marketing channels. In the end, when applying the analysis set forth in the controlling precedent of In re E.I. du pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the factors weighed in favor of the Applicant. See our webpage entitled Simple Trademark Rules and Considerations where the thirteen Du Pont factors are reviewed under the heading Thirteen Factors To Consider When Determining Infringement. See also our blog post entitled TTAB Finds Wine and Water Related Goods Under Likelihood Of Confusion, where we provide guidance for making likelihood of confusion determinations.

With regard to the comparison of the marks in relationship to the goods, the marks would mean different things to each respective consumer group. As mentioned above the “R” in the Applicant’s mark would be understood to mean the name of the software programming language. While the “ER” in the Registrant’s mark is broadly understood to mean “entity relationship” which refers to software for developing a relational database. These different commercial impressions and connotations swayed the Board in dismissing the Opposition, along with the purchasing conditions, the sophistication of the relative consumers, and of course the narrowed identifications.

Taking care to precisely word your description of goods and services in your trademark application is critical, especially if there are similar marks in related fields already registered or pending applications at the USPTO. We work with our clients to achieve a balance of broad protection, while taking reasoned measures to narrow certain identifications in an effort to avoid unnecessary litigation at the Trademark Trial and Appeal Board (TTAB). Please feel free to contact one of our NY trademark attorneys for a courtesy consultation in regard to your trademark matter. We would be happy to speak with you and assist you with protecting your intellectual property.